Countrywide Financial
Corporation v.
Claim Number: FA0805001189153
PARTIES
Complainant is Countrywide Financial Corporation (“Complainant”), represented by Lance
G. Johnson, of Roylance, Abrams, Berdo & Goodman,
L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <counrtwide.com>,
<countrywinde.com>,
<countrywude.com>, and <customers-countrywide.com>,
registered with Compana, LLC.
PANEL
The undersigned, Daniel B. Banks, Jr., as Panelist, certifies that he
has acted independently and impartially and to the best of his knowledge has no
known conflict in serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 6, 2008; the National
Arbitration Forum received a hard copy of the Complaint on May 12, 2008.
On May 7, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <counrtwide.com>,
<countrywinde.com>,
<countrywude.com>, and <customers-countrywide.com>
domain names are registered with Compana, LLC
and that the Respondent is the current registrant of the names. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On May 19, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 9, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@counrtwide.com, postmaster@countrywinde.com, postmaster@countrywude.com,
and postmaster@customers-countrywide.com by e-mail.
A timely Response was received and determined to be complete on June 9, 2008.
On June 18, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Since 1969, Complainant has
owned service mark rights in the name COUNTRYWIDE in connection with the
financing of home loans. Complainant owns several COUNTRYWIDE service mark
registrations for its business, duly issued by the U.S. Patent and Trademark
Office. Complainant’s service mark rights are also found in recognized
Respondent’s domain names are
confusingly similar to Complainant’s COUNTRYWIDE mark in violation of Policy ¶
4(a)(i) because (a) Complainant owns service mark rights to COUNTRYWIDE, (b)
there is no evidence that Respondent has ever been known by the name
Countrywide, (c) the use of the disputed domain names divert users to a link
farm at each site with pay-per-click links that are identified with
Complainant’s COUNTRYWIDE mark and name, and (d) the dominant portion of the
domain names is Complainant’s service mark (or blatant misspellings thereof)
sometimes proceeded by a term that refers to its customers and recipients of the
services offered by Complainant. The blatant misspellings are confusingly
similar variants of Complainant’s COUNTRYWIDE service mark and the added term
does not alter the dominant use of Complainant’s COUNTRYWIDE service mark,
thereby actually promoting confusion by presenting a false sense of source,
sponsorship, affiliation or endorsement between Respondent and Complainant.
Respondent does not have any
rights or legitimate interests in the disputed domain names in violation of
Policy ¶ 4(a)(ii). Respondent is not now known, and has not been known before
registration, under the name “COUNTRYWIDE.” Respondent is not a licensee,
agent, associated, or in any other way lawfully affiliated with Complainant or
the home financing services offered by Complainant under the COUNTRYWIDE mark.
Respondent does not have any registered trademark or service mark rights in a
“countrywide” designation. Respondent is using the disputed domain names in a
misleading manner to divert consumers for commercial gain. Such uses are not bona fide uses under Policy ¶ 4(a)(ii).
Respondent registered and used
the disputed domain names in bad faith in violation of Policy ¶ 4(a)(iii),
because, among other things, Respondent (a) had at least constructive notice,
and most likely had actual notice, of Complainant’s prior rights in the mark
COUNTRYWIDE for financing home mortgages, and (b) registered and is using
confusing variants of Complainant’s registered trademarks, service marks and
reflective domain names. Respondent
offers services that compete with those of Complainant and uses the disputed
domain names to disrupt Complainant’s business by diverting potential customers
from Complainant’s site to those of Respondent. Respondent uses the disputed
domain names to create a false sense of source, sponsorship, affiliation or
endorsement between Respondent and Complainant for commercial gain.
B. Respondent
After receipt of a cease and desist letter
from Complainant, Respondent investigated this matter and was willing to
transfer the disputed domain names but was unable to effectuate the transfer. Respondent agrees to the relief requested by
Complainant and will, upon order of the Panel, transfer the disputed domain
names. Respondent does not admit to the
three elements of the Policy but makes an offer of “unilateral consent to
transfer” as prior Panels have deemed it.
Respondent does request the Panel to order the immediate transfer of the
disputed domain names.
DISCUSSION
The Panel finds that Respondent
does not contest any of Complainant’s allegations regarding the <counrtwide.com>,
<countrywinde.com>,
<countrywude.com>, and <customers-countrywide.com> domain
names. Rather, Respondent has
consented to judgment in favor of Complainant and authorized the immediate
transfer of the subject domain names. Under
these circumstances, the Panel decides to forego the traditional UDRP
analysis and order the immediate transfer of the domain names. See Boehringer Ingelheim Int’l GmbH v.
Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003)
(transferring the domain name registration where the respondent stipulated to
the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc.,
FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both
asked for the domain name to be transferred to the Complainant . . . Since
the requests of the parties in this case are identical, the Panel has no scope
to do anything other than to recognize the common request, and it has no mandate
to make findings of fact or of compliance (or not) with the Policy.”); see
also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24,
2005) (“[U]nder such circumstances, where Respondent has agreed to comply with
Complainant’s request, the Panel felt it to be expedient and judicial to forego
the traditional UDRP analysis and order the transfer of the domain names.”).
DECISION
For the reasons stated above, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <counrtwide.com>,
<countrywinde.com>,
<countrywude.com>, and <customers-countrywide.com>
domain names be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: July 2, 2008